Ex Parte Nagel et al

Patent Trial and Appeal Board

Feb 26, 2019

13392736 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/392,736 07/10/2012
26161 7590 02/28/2019
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Thomas Nagel
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
12-151-WO-US 1393
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
02/28/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS NAGEL,
RENE RICHTER, and
ROBERT WITT 1
Appeal2018-004836
Application 13/392,736
Technology Center 3700
Before STEP AN ST AI CO VICI, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Non-Final rejection of claims 1, 3, 5-7, 12, and 13, which
constitute all the claims pending in this application. Reply Br. 2; Non-Final
Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C.
1 "The real party in interest is Sanofi-Aventis Deutschland GmbH, to which
this invention is assigned." App. Br. 2. We thus proceed on the basis that,
for purposes of this appeal, Sanofi-Aventis Deutschland GmbH is the
"Appellant."
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Application 13/392,736
§ 6(b ). For the reasons explained below, we do not find error in the
Examiner's rejections of these claims. Accordingly, we AFFIRM the
Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a medicament container,
comprising a bag with an outlet, the bag compressible by a compression
means." Spec. 1:5-6. Claim 1, which is the sole independent claim, is
illustrative of the claims on appeal, and is reproduced below.
1. An arrangement for administering a liquid medicament
comprising a medicament container with a bag,
further comprising a compression means for locally
compressing the bag,
wherein the bag comprises an outlet and two opposing
parts of an inner surface, characterized in that the opposing parts
of the inner surface are welded together when subjected to the
compression means and
the bag is kept from returning to its initial shape after
having been subjected to the compression means and after the
compression means are pulled back, wherein the compression
means comprises a wiper pressed against the bag, and wherein
the wiper is configured to apply a force on the bag in a direction
perpendicular to a longitudinal direction of the bag.
REFERENCES RELIED ON BY THE EXAMINER
Cunningham US 4,013,073 Mar. 22, 1977
Stevenson US 4,273,258 June 16, 1981
Light US 5,743,434 Apr. 28, 1998
Picard US 6,155,458 Dec. 5, 2000
THE REJECTIONS ON APPEAL
Claims 1, 3, 5-7, 12, and 13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cunningham and Picard.
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Application 13/392,736
Claims 1, 3, 5-7, 12, and 13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cunningham and Light.
Claims 1, 3, 5-7, 12, and 13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cunningham and Stevenson.
ANALYSIS
All of the claims (i.e., claims 1, 3, 5-7, 12 and 13) are rejected under
the combination of Cunningham and Picard, under the combination of
Cunningham and Light, and under the combination of Cunningham and
Stevenson. See Non-Final Act. 5-11. Appellant argues all these claims and
all these rejections together, and also addresses each of Cunningham, Picard,
Light, and Stevenson. See App. Br. 2-13. We select claim 1 for review,
with the remaining claims standing or falling therewith. See 37 C.F.R.
§ 4I.37(c)(l)(iv). We also address each of Appellant's arguments regarding
the teachings of Cunningham, Picard, Light, and Stevenson.
Claim construction
Claim 1 includes limitations directed to a "compression means" and
"wherein the compression means comprises a wiper pressed against the
bag." Appellant's Drawings provide an illustration of a "roller"
compression means (Fig. 1 ); a "ram" compression means (Fig. 2); and, a
"wiper" compression means (Fig. 3). The illustration of this last "wiper"
compression means is replicated below.
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Application 13/392,736
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"Figure 3 is a schematic view of another embodiment of the
arrangement 1 which differs from the embodiments shown in Figures 1 and
2 by the compression means having the shape of a wiper. The wiper 6 is
pressed against the bag 3." Amendment to Specification dated May 10,
2017.
Appellant's Specification fails to provide any detailed description of a
"wiper" other than to state, "[t]he roller may alternatively be replaced by a
shoe or wiper or ram pressed against the bag." Spec. 3: 1-2; see also id. at
5: 19. Lacking such guidance, the Examiner provides examples of dictionary
definitions of both the term "wipe" and "wiper." See Non-Final Act. 2--4;
Ans. 2--4, 13. "Therefore, for examining purpose, Examiner interprets the
term 'wiper' broadly such as: an object/element/component (such as a piece
of block or something equivalent) is used for wiping (e.g. rubbing or friction
action by sliding) on a surface of the object; or a projecting cam or a cam as
defined above." Non-Final Act. 4; Ans. 4, 13.
Appellant disagrees stating, "Appellant respectfully asserts that one of
ordinary skill in the art would interpret the term 'wiper' to be similar to a
windshield wiper blade, as shown in Figure 3." App. Br. 5; see also id. at 8,
10; Reply Br. 2--4. Appellant's more narrow definition is not supported by
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Application 13/392,736
the language of claim 1. 2 A windshield wiper blade is readily understood to
move along an arc about a pivot point whereas claim 1 recites, "wherein the
wiper is configured to apply a force on the bag in a direction perpendicular
to a longitudinal direction of the bag." Emphasis added. Appellant does not
explain how the claimed requirement of the wiper moving "in a direction
perpendicular to a longitudinal direction of the bag" is satisfied by the arc-
like pivoting motion of a windshield wiper blade.
Appellant also states, "[t]he Examiner is interpreting 'wiper' in a way
that would also encompass 'a shoe' and 'a ram."' Reply Br. 4. Regarding
how "a shoe" might operate, Appellant's Specification is silent on this point
(see Spec. 3:1-2, 5:19), and we decline to speculate in this matter without
further guidance. Regarding the operation of "a ram," Appellant's
Specification states that "a ram" is "used to consecutively compress[]" the
tube as shown in Fig. 2. Spec. 5:10-17. We understand from such teachings
that upon completion of the downward tube compression stroke (F), the ram
is lifted and moved over an uncompressed portion of the tube before the ram
again compresses downwardly (i.e., "consecutively compressing"). This is
unlike the operation of a "wiper" which is understood to involve the action
of sliding on a surface. See supra.
Thus, in view of the above, we do not find fault with the Examiner's
definition of the term "wiper" because it is consistent with an ordinary
meaning of the term and the Specification. See Non-Final Act. 4; Ans. 4, 13.
2 The Examiner further states, "[ n Jo where in the original specification
discloses that the term 'wiper' is to be treated similar to a windshield wiper
blade." Ans. 12; see also Ans. 13 ("The original specification does not
provide any specific structure of the wiper 6.").
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Application 13/392,736
Cunningham
The Examiner primarily relies on the teachings of Cunningham for
disclosing the recited limitations, and even addresses Cunningham's
teaching of using the thumb and forefinger of a user to squeeze material out
of the tube. 3 See Non-Final Act. 5; Ans. 13. The Examiner states that this
disclosure of squeezing is similar to "rubbing/wiping on the surface of the
bag 20 to expel the fluid." Non-Final Act. 5. "In other words, the thumb,
forefinger or any fingers are equivalent as the wiper of the claimed
invention." Non-Final Act. 5.
Appellant does not dispute Cunningham's disclosure of squeezing or
flattening the walls of the tube together ( Cunningham 1: 60-68) which
suggests the application of "force on the bag in a direction perpendicular to a
longitudinal direction of the bag" as recited. Instead, Appellant addresses
Cunningham's reliance on the user's thumb/finger stating "[o]ne skilled in
the art would not reasonably interpret a finger or thumb to be the 'wiper' of
claim 1" and that "Cunningham does not show such 'compression means' as
part of its device." App. Br. 6.
There is merit to Appellant's assertion regarding the Examiner's
correlation of the user's digits to the recited "compression means."
However, the Examiner also states, "[t]here is another way to" proceed, i.e.,
by combining the teachings of Cunningham with (a) Picard (Non-Final Act.
5-6); (b) Light (Non-Final Act. 7-8); and/or, (c) Stevenson (Non-Final Act.
3 Cunningham teaches "[a]s the walls are further squeezed together by
moving generally one's thumb and forefinger toward the discharge end of
the syringe, along the tube, the complete expression across the tube is then
completed throughout the entire length of the tube." Cunningham 1:65-2:2.
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Application 13/392,736
10). See also Ans. 13. Each of these three additional references are
addressed below.
Picard
Appellant contends, "[t]he Examiner asserts that upper pressure plate
3 is the 'wiper' of claim 1" and that "Appellant disagrees that the upper
pressure plate 3 could be characterized as a wiper." App. Br. 8. This is
because Picard's upper plate 3 is "an expeller" having one purpose being to
"not allow contents to flow backwards into the tube." App. Br. 8
(referencing Picard 1 :65---67). Appellant contends this purpose is redundant
because Cunningham already prevents such backflow (referencing
Cunningham 3 :46-48), and as such, there would be "no reason to modify the
device in Cunningham to include the upper pressure plate of Picard." App.
Br. 8; see also Reply Br. 4--5.
Regarding Picard's "expeller," another stated purpose of this item (not
addressed by Appellant) is to "slide along the length of a collapsible tube in
order to aid in expelling its content" and in doing so, "much less pressure is
required." Picard 1 :63---65. Picard also states that the invention "described
herein offers a much simpler and efficient way of performing" the operation
of expressing contents from a tube. Picard 2: 1--4. Thus, in view of Picard's
teachings, the Examiner deemed it obvious for a person of ordinary skill in
the art to have combined Cunningham and Picard. 4 See Non-Final Act. 6;
see also Ans. 14--15. Consequently, Appellant's focus on Picard's expeller
4 The Examiner states that adding "wiper (3) of Picard would serve to
provide an alternative way of achieving the same result ... and additionally
would be beneficial for one unable to compress the bag with their thumb and
forefinger." Ans. 15.
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being for preventing backflow is not a full and complete description of the
purpose of Picard' s expeller and as such, we do not fault the reasons
expressed by the Examiner for combining these references. See supra.
Appellant also describes Cunningham's device as being disposable
and that, "one would not want to add an additional mechanical feature to a
disposable device." App. Br. 8; see also Reply Br. 5. However, Picard's
device is described as being "reusable" and that it "can easily be removed
and installed onto another tube." Picard 2: 14--18. Hence, Appellant's
contention regarding the disposability of Cunningham's device is not
persuasive that the Examiner erred in combining Cunningham's disposable
device with Picard's re-usable device.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1, 3, 5-7, 12, and 13 as being
unpatentable over Cunningham and Picard.
Light
The Examiner states, "the compression means 24 in Light is fair
enough to call as a 'wiper." Non-Final Act. 8; see also Ans. 15. Appellant
contends that even if this were the case, there would be "no reason to modify
the device in Cunningham to include the lever member of Light." App. Br.
IO; see also Reply Br. 4. This is because the problems solved by Light are
those already addressed by Cunningham. App. Br. 1 O; see also Reply Br. 5.
This is not a true understanding of both Cunningham and Light, and
the Examiner's reliance thereon. See Ans. 16. Cunningham, as disclosed
above, teaches using a thumb and forefinger to squeeze material from a tube.
See Cunningham 1:65-67. Light discloses problems with this digital
method of squeezing, including leaving "corrugated deformations" in the
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tube and that "[ n Jot infrequently, such corrugations cause tube wall fractures
and spilled contents." Light 1:18-25. Light resolves these problems and
does so via a portable/reusable device. Light 1 :56-60; 6:30-32 ("slide in a
fresh tube."). We thus do not find fault with the Examiner's assessment that
"Light would serve to provide an alternative way of achieving the same
result of expelling all the contents from the bag and additionally would be
beneficial for one unable to compress the bag with their thumb and
forefinger." 5 Ans. 16.
Appellant also describes Cunningham's device as being disposable
and that, "one would not want to add an additional mechanical feature to a
disposable device." App. Br. 10-11; see also Reply Br. 5. However,
Light's device is described as being "portable" and that it "is easy to operate,
and which is amenable to low cost, high volume unit production that will
lead to widespread adoption." Light 1 :56-60. Hence, Appellant's
contention regarding the disposability of Cunningham's device is not
persuasive that the Examiner erred in combining Cunningham's disposable
device with Light's "portable" device.
Accordingly, we are not persuaded the Examiner erred in concluding
that it would have been obvious to combine Cunningham and Light. See
supra. We sustain the Examiner's rejection of claims 1, 3, 5-7, 12, and 13
as being unpatentable over Cunningham and Light.
5 The Examiner also states that it would have been obvious "to modify the
device of Cunningham with providing compression means as a
wiper/rotating pressure plate, as taught by Light, in order to apply a force on
the bag in a perpendicular direction to expel small amount of medicament."
Non-Final Act. 8-9.
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Stevenson
The Examiner states that, as regarding Stevenson, "the compression
means 56 is being as a block used for wiping/rubbing on a surface of the
tube 20." Non-Final Act. 10; see also Ans. 17. Appellant responds that
there is "no reason to modify the device in Cunningham to include the foot
member of Stevenson." App. Br. 12; see also Reply Br. 4. Appellant
contrasts Cunningham's teaching of complete expression with Stevenson
disclosure of only expressing a desired amount. See App. Br. 12.
Consequently, Appellant contends that the teachings of Cunningham and
Stevenson are not combinable "because they are directed to different
solutions." App. Br. 12. Appellant also contends, "[o]ne would not want to
add an additional mechanical feature to a disposable device when it already
works as intended." App. Br. 13; see also Reply Br. 5.
First, it is noted that whether the amount expressed is "complete"
(Cunningham) or partial (Stevenson), such feature is not recited in claim 1.
Further, Appellant does not make clear how Stevenson's disclosure of partial
expression is not also performed by Cunningham's device up until the time
of Cunningham's "complete" expression. Additionally, the fact that
Cunningham's device may be disposable, is not to say that Stevenson's
device is also a one-time-use product. Instead, Stevenson's device is
directed for use with a variety of different tubes "longitudinally disposed
within the recess 18." Stevenson 2:49-50.
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Further, we do not find fault with the Examiner's assessment to the
effect that Stevenson6 "would serve to provide an alternative way of
achieving the same result of expelling all the contents from the bag and
additionally would be beneficial for one unable to compress the bag with
their thumb and forefinger." Ans. 16. Hence, based on the record presented,
we are not persuaded the Examiner erred in combining Cunningham and
Stevenson. We sustain the Examiner's rejection of claims 1, 3, 5-7, 12, and
13 as being unpatentable over Cunningham and Stevenson.
DECISION
The Examiner's art rejections of claims 1, 3, 5-7, 12, and 13 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6 The Examiner referenced "Light" but we understand the Examiner to be
discussing Stevenson instead. See Ans. 18.
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